The Complainant is Salvatore Ferragamo S.p.A. of Firenze, Italy, represented by Studio Legale SIB, Italy.
The Respondents are Deng Lingtao of Hong Kong, China and Ludwig Rhys of China. 2. The Domain Names and Registrar
The disputed domain names , , , are registered with GoD, LLC
(the “Registrar”). The disputed domain names, with the exception of , were registered on October 30, 2014. The disputed domain name was registered on October 23, 2014. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2014. On December 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 23, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing their contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on January 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 29, 2015.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on February 12, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant states in evidence that it has been using the trade mark FERRAGAMO since at least 1927 with respect to shoes, and since at least 1968 with respect to handbags. It owns more than 400 applications and registrations for the trade marks FERRAGAMO and SALVATORE FERRAGAMO around the world.
It manufactures, markets and sells shoes, handbags, wallets, luggage, belts, apparel, fragrances, gift items, and custom jewelry among other items. Its products can be found at retail stores in countries including Italy, the United States, the United Kingdom of Great Britain and Northern Ireland, France, Germany, Canada, China, Japan, the Republic of Korea, Indonesia, Malaysia, Singapore, Thailand, Australia, Spain, Switzerland, Saudi Arabia, Belgium and the Philippines.
The Complainant states that it has a substantial reputation due to its founder’s historical renown in the fashion industry. The Complainant extensively advertises and promotes its products.
The Complainant states that it owns registrations for several domain names comprising the mark FERRAGAMO, including and .
The Complainant has provided evidence showing that as at December 22, 2014, the disputed domain names resolved to websites displaying the name “Salvatore Ferragamo”, and offering what purported to be FERRAGAMO goods for sale. The foot of each website stated “Copyright 2014” followed by the URL for the website. The contact address given for each website was identical. 5. Parties’ Contentions A. Complainant
The Complainant requests that the Panel consider this UDRP as a single complaint. The Complainant contends that the disputed domain names are under common control, shown by the fact that the contact details on the websites hosted by the disputed domain names are identical. The disputed domain names were registered in the same week with the same Registrar and are identical in appearance.
The Complainant contends that its trade marks are extremely well-known in the fashion industry as well as by the public, and are recognized and relied on as a symbol of quality products marketed exclusively by the Complainant.
The Complainant contends that the disputed domain names are confusingly similar to its FERRAGAMO mark. The disputed domain names are differentiated from the FERRAGAMO mark by the use of generic terms such as “cheap”, “online”, and “store”, among others. The Complainant contends that as the suffixes describe retail activities related to the Complainant’s products, they should be considered insufficient to dispel Internet user confusion from occurring.
The Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not affiliated with the Complainant and do not own any trade mark registrations for FERRAGAMO or any other mark comprising this sign in connection with any goods or services. The Complainant has not licensed the Respondents to use its mark or to apply for any domain names incorporating that mark. The Complainant also asserts that the Respondents are not commonly known by the disputed domain names and do not make bona fide use of them. The Complainant contends that the Respondents chose domain names which consisted of the Complainant’s mark and some descriptive terms, and thereby intentionally violated the Complainant’s rights. In addition, the Complainant contends that to the best of its knowledge the goods offered for sale on the Respondents’ websites hosted on the disputed domain names are counterfeit and the Respondents cannot have legitimate interest in the sale of such items.
The Complainant asserts that the Respondents registered and are using the disputed domain names in bad faith because they offer counterfeit goods for sale on their websites. The Complainant asserts that the Respondents’ bad faith is confirmed by the unauthorized use of its official advertising images and logos. The Complainant asserts that the Respondents’ registrations of the disputed domain names occurred with a view to taking unfair advantage of the reputation of the Complainant’s mark. The Complainant contends that the disputed domain names discourage Internet users from locating the Complainant’s true website, thereby diluting the value of the Complainant’s FERRAGAMO mark.
In addition, the Respondents’ bad faith is demonstrated by the fact that they own numerous domain names which include well known third parties’ trade marks in the fields of fashion and luxury goods – for example, (per Deng Lingtao) ; ; ; and for example (per Ludwig Rhys) ; ; and . These are just a few of the domain names in this category registered by the Respondents.
The Complainant requests that the disputed domain names be transferred to it. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel finds, on the basis of the commonality of contact information on the websites hosted on each of the disputed domain names, that the disputed domain names are subject to common control. The Panel further finds that consolidation is fair and equitable to all parties.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain names in order to succeed in this proceeding:
(i) That the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights; and
(ii) That the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established trade mark rights and goodwill in its registered trade marks.
The Panel finds that the disputed domain names , , , and are confusingly similar to the Complainant’s registered mark FERRAGAMO. The mark FERRAGAMO is the dominant component of each of the disputed domain names. It is distinctive and memorable, compared with the generic terms “best”, “cheap”, “online”, “store”, “outlet”, and “sale”. As such, the addition of these generic terms does not prevent the disputed domain names from being confusingly similar to the Complainant’s mark.
The Panel accordingly finds that the disputed domain names are confusingly similar to trade marks in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish that they have rights or legitimate interests in the disputed domain names, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the Respondents used or made demonstrable preparations to use the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) That the Respondents have been commonly known by the disputed domain names, even if they had acquired no trade mark or service mark rights; or
(iii) That the Respondents are making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
The overall burden of proof for establishing that the Respondents have no rights or legitimate interests in respect of the disputed domain names lies with the Complainant.
The Complainant states, and the Panel accepts, that the Respondents are not affiliated with the Complainant and the Complainant has not licensed or otherwise authorized the Respondents to use the FERRAGAMO mark.
In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.
Accordingly, and in the absence of any response from the Respondents, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain names in bad faith:
(i) Circumstances indicating that the Respondents have registered or have acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain names; or
(ii) That the Respondents have registered the disputed domain names in order to prevent the owner of the trade mark from reflecting the mark in corresponding domain names, provided that the Respondents have engaged in a pattern of such conduct; or
(iii) That the Respondents have registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ websites or other on-line locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites or locations or of a product or service on the Respondents’ websites or locations.
The Panel is satisfied that the disputed domain names were registered in bad faith. In this regard, the Panel relies on the following:
(a) The disputed domain names all include the Complainant’s distinctive trade mark FERRAGAMO.
(b) The Panel finds that the Respondents must have been aware of the Complainant’s well known trade mark when registering each of the disputed domain names and thereby registered the domains in bad faith. In each case the suffix following the FERRAGAMO mark is a clear pointer to some form of retail services associated with that well known mark.
(c) This is confirmed by the fact that the purpose and actual use of each of the disputed domain names has been to host websites which offer allegedly counterfeit clothing bearing the Complainant’s trade mark. The Respondents plainly must have known of the Complainant’s well known trade marks at the time of registration and planned to use the disputed domain names for that purpose (now plainly put into effect).
As to the second limb of the third element, the Panel is also satisfied that the disputed domain names have been and are being used in bad faith. In this regard the Panel relies on the following:
(a) The websites hosted at each of the disputed domain names use without authority the Complainant’s official advertising images and logos with the aim of passing these off as being from the Complainant, when in fact there is no connection.
(b) Each of the disputed domain names will confuse consumers into believing that these are somehow connected with or put out by the Complainant when that is not the case.
(c) The Complainant states, and the Panel accepts, that to the best of its knowledge counterfeit products are being offered for sale at the websites hosted at each of the disputed domain names.
(d) The Panel is also prepared to take into account that there is a pattern of registrations being engaged in by the Respondents of registering multiple domain names containing very well-known fashion and luxury brand trade marks. It is unlikely that the Respondents have any rights (cumulatively) to such brands as CONVERSE, GUCCI, HUGO BOSS, SWAROVSKI, TIMBERLAND, KATE SPADE, NIKE, LOUIS VUITTON, OAKLEY and PRADA (to name but a few shown in reverse WhoIs searches provided by the Complainant). These registrations indicate a course of conduct and are a strong indication of bad faith, particularly in conjunction with the factors already listed.
Accordingly, the Panel finds that paragraph 4(a)(iii) is satisfied in favor of the Complainant. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , and be transferred to the Complainant.
Andrew Brown Q.C.
Sole Panelist
Date: February 16, 2015
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